Trade mark decision

BL Number

O/380/03

Decision date

2 December 2003

Hearing officer

Mr D Landau

Mark

KUDO ELBOW / KUDO TOTAL ELBOW SYSTEM

Classes

10

Applicant

Tact Medical Inc

Opponent

Biomet Merck Limited

Opposition

Section 5(4)(a)

Result

Section 5(4)(a): - Opposition successful.

Points Of Interest

• 1. The Hearing Officer was concerned about gaps in the evidence from both parties but took the view that he must decide the dispute on the basis of the papers before him.

Summary

The opponents filed evidence to show that they had used the marks KUDO, KUDO ELBOW, KUDU ELBOW SYSTEM, KUDO ULNAR and KUDO HUMERAL in relation to artificial elbow implants from 1989 onwards and that they have about 20% of the market in this field.

The original elbow replacement system was devised by a Dr Kudo in Japan in the 1970s. Dr Kudo had approached Tact (the present applicants) about collaboration with an orthopaedic company and had been referred to Bionet Inc. (The opponent’s parent company). Contact was arranged with the opponents in 1986 and following further development, manufacture and sales commenced in 1989. At the same time Tact was appointed as the exclusive authorised distributor of the full range of Bionets products, including elbow replacement systems under the name KUDO, in respect of the Japan market.

The applicants also filed evidence from Dr Kudo. He explained his contact with Tact and Bionet and how the elbow prosthesis was developed and came to bear his name. He stated that the prosthesis was developed between himself and Tact, and Biomet was used to manufacture it. He disputed that Bionet had been involved in development. Dr Kudo also stated that Tact had applied to register the marks KUDO ELBOW and KUDO TOTAL ELBOW SYSTEMS in Japan in 1989 and registration had been effected in November 1989. They still owned those marks.

The Hearing Officer was somewhat concerned as to how the opponents had used their marks because he thought the use might be seen as descriptive use. However, the goods always bore the marks and these marks indicated the goods of the proprietor and distinguished the proprietors goods from those of other firms in the same field. He, therefore, accepted that the opponents use was trade mark use and that if another firm was to commence to use identical marks in relation to identical goods, damage in the context of passing-off would occur. The opponents thus succeeded under Section 5(4)(a). The fact that the applicants owned the trade marks applied for in Japan was of no help to them.